`571-272-7822
`
`
`
`
`
`
`
`Paper 9
`Date: August 14, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`NISSAN CHEMICAL INDUSTRIES, LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-01069
`Patent 5,856,336
`____________
`
`
`
`Before JACQUELINE WRIGHT BONILLA and SHERIDAN K.
`SNEDDEN, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`I.
`
`IPR2015-01069
`Patent 5,856,336
`
`INTRODUCTION
`Petitioner Mylan Pharmaceuticals Inc. (“Petitioner”) filed a Petition
`requesting inter partes review of claims 1 and 2 of U.S. Patent No.
`5,856,336 (Ex. 1001). Paper 2 (“Pet.”). The Petition identifies Mylan
`Pharmaceuticals Inc. and Mylan Inc. as the only real parties-in-interest. Pet.
`1.
`
`Patent Owner Nissan Chemical Industries, Ltd. (“Patent Owner”) filed
`a Preliminary Response (Paper 7, “Prelim. Resp.”) asserting, inter alia, that
`an unnamed entity—Mylan N.V. (“MNV”)—should have been identified as
`a real party-in-interest. Prelim. Resp. 4–11. Patent Owner asserts, in
`particular, that “the lines between MNV, MI, and MPI with respect to the
`Mylan corporate family’s shared pharmaceutical business are blurred” and
`that their “intertwined interests” support a finding that MNV is a real party-
`in-interest. Id. at 5–6. Patent Owner requests dismissal of the Petition as
`untimely under 35 U.S.C. § 315(b). Id. at 9, 11.
`A few weeks after Patent Owner filed its Preliminary Response to the
`Petition, counsel for Petitioner contacted the Board to request authorization
`to file “a brief response, together with supporting declaration testimony to
`address and refute solely the real-party-in-interest issues raised in Patent
`Owner’s Preliminary Response.” As part of the request, Petitioner
`represented that Patent Owner requests “authorization to file a reply brief
`and depose any declarant Mylan offers in support of its response.”
`
`II. DISCUSSION
`Under 35 U.S.C. § 312(a)(2), we may consider a petition for inter
`partes review “only if . . . the petition identifies all real parties in interest.”
`Our rules require Petitioners and Patent Owners to “[i]dentify each real
`
`
`
`2
`
`
`
`IPR2015-01069
`Patent 5,856,336
`
`party-in-interest for the party.” 37 C.F.R. § 42.8. Thus, the question of
`whether Petitioner has identified all real parties-in-interest is a threshold
`issue for our consideration.
`We have determined that limited additional briefing and evidence,
`directed solely to the real-party-in-interest issue raised in Patent Owner’s
`Preliminary Responses, would be beneficial. In the meantime, we point the
`parties to a recent Decision in Case IPR2015-00546, slip op. at 10–19
`(PTAB July 28, 2015) (Paper 25).
`
`III. ORDER
`Accordingly, it is
`ORDERED that Petitioner may file no more than two (2) declarations
`of no more than five (5) pages each (excluding cover and service pages),
`directed solely to the real party-in-interest issue raised in Patent Owner’s
`Preliminary Response. The two declarations shall be filed no later than
`August 28, 2015;
`FURTHER ORDERED that Petitioner shall file a response of no more
`than ten (10) pages, directed solely to the real party-in-interest issue raised in
`Patent Owner’s Preliminary Response. The response shall be filed no later
`than August 28, 2015;
`FURTHER ORDERED that Petitioner shall make each of its
`declarants available for deposition by counsel for Patent Owner, limited
`solely to the factual issues raised in each declarant’s declaration, at a time
`and location mutually agreeable to the parties and witnesses in order to
`permit the parties to comply with the filing date requirements of this Order;
`
`
`
`3
`
`
`
`IPR2015-01069
`Patent 5,856,336
`
`FURTHER ORDERED that counsel for Patent Owner may depose
`Petitioner declarants for not more than three (3) hours of deposition time
`each;
`
`FURTHER ORDERED that Patent Owner shall file a reply of no
`more than five (5) pages to Petitioner’s response no later than September 17,
`2015; and
`FURTHER ORDERED that Petitioner shall not be permitted to file
`any further response to Patent Owner’s reply.
`
`
`
`
`
`
`PETITIONER:
`JITENDRA MALIK
`DEANNE MAZZOCHI
`jitty.malik@alston.com
`dmazzochi@rmmslegal.com
`
`
`PATENT OWNER:
`DAVID CONLIN
`KATHLEEN CARR
`dgconlin@mintz.com
`KBCarr@mintz.com
`
`
`
`
`4
`
`
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